97-30118. Changes to Patent Practice and Procedure; Correction

[Federal Register Volume 62, Number 221 (Monday, November 17, 1997)]
[Rules and Regulations]
[Pages 61235-61236]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 97-30118]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

RIN 0651-AA80


Changes to Patent Practice and Procedure; Correction

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule; correction.

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SUMMARY: The Patent and Trademark Office (PTO) published a notice of 
final rulemaking entitled ``Changes to Patent Practice and Procedure'' 
in the Federal Register of October 10, 1997 (62 FR 53131). This 
document clarifies some of the comments, corrects a typographical 
error, and removes an incorrect paragraph.

EFFECTIVE DATE: December 1, 1997.

FOR FURTHER INFORMATION CONTACT: Hiram H. Bernstein or Robert W. Bahr, 
Senior Legal Advisors, by telephone at [phone]; or by mail 
addressed to: Box Comments--Patents, Assistant Commissioner for 
Patents, Washington, DC 20231 marked to the attention of Mr. Bernstein; 
or by facsimile to [phone].

SUPPLEMENTARY INFORMATION: The PTO published a notice of final 
rulemaking entitled ``Changes to Patent Practice and Procedure'' in the 
Federal Register of October 10, 1997 (62 FR 53131). The comments on the 
changes to 37 CFR 1.16, 1.121, and 1.193 contained errors. In addition, 
the amendment to 37 CFR 1.17(q) contained a typographical error and the 
amendment to 37 CFR 1.121(a)(4) should have been withdrawn. This 
document clarifies the comments, corrects the typographical error, and 
removes an incorrect paragraph.
    In the Changes to Patent Practice and Procedure notice of final 
rulemaking that was published in the Federal Register of October 10, 
1997 (62 FR 53131), make the following changes:
    1. On page 53134, second column, lines 7-10, delete the following 
sentence:
    Section 1.16 is amended to add new paragraphs (m) and (n) including 
the unassociated text following paragraphs (d) and (l).
    2. On page 53154, first column, lines 6-10, change the sentence--
    The ability to provide directions to the Office for the handwritten 
deletion of five words or less for each claim does not encompass 
deletion of equations, charts or other non-word material.
        to--
    An equation, chart or other non-word material should not be amended 
by an instruction to delete (or add) only a part of the equation, 
chart, or non-word material. Rather, it should be amended by an 
instruction to delete the entire equation, chart, or non-word material 
and to add in its place the equation, chart or other non-word material 
to be substituted for the material that was deleted.
    3. On page 53154, first column, lines 29-36, delete the following 
paragraph:
    Paragraph (a)(4) of Sec. 1.121 requires that any amendment 
presented in a substitute specification must be presented under the 
provision of this section either prior to or concurrent with the 
submission of the substitute specification. The paragraph contains 
material from canceled Sec. 1.115.
    4. On page 53168, second column, lines 8-12, change the sentences--
    Thus, the Office does not consider such a rejection to constitute a 
``new ground of rejection'' within the meaning of Sec. 1.193(b). 
Nevertheless, Sec. 1.193(b)(2) *  *  *.
        to--
    Thus, the Office does not consider such a rejection to constitute a 
``new ground of rejection'' within the meaning of Sec. 1.193(a). 
Nevertheless, Sec. 1.193(a)(2) *  *  *.


Sec. 1.17  [Corrected]

    5. Section 1.17 on page 53183, first column, correct paragraph (q) 
to read as follows:


Sec. 1.17  Patent application processing fees.

* * * * *
    (q) For filing a petition to the Commissioner under a section 
listed below which refers to this paragraph--50.00.
    Sec. 1.41--to supply the name or names of the inventor or inventors 
after the filing date without a cover sheet as prescribed by 
Sec. 1.51(c)(1) in a provisional application.
    Sec. 1.48--for correction of inventorship in a provisional 
application.
    Sec. 1.53--to accord a provisional application a filing date or to 
convert a nonprovisional application filed under Sec. 1.53(b) to a 
provisional application under Sec. 1.53(c).
* * * * *
    6. Section 1.121 on page 53193, first column, correct paragraph 
(a)(4) to read as follows:


Sec. 1.121  Manner of making amendments.

    (a) *  *  *
    (4) [Reserved]
* * * * *

[[Page 61236]]

    Date: November 6, 1997.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 97-30118 Filed 11-14-97; 8:45 am]
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